That is the question Judge Andrews addressed yesterday. He found that yes, a letter listing a patent and accused product is enough to state a claim in a complaint for pre-suit willfulness—the letter need not include things like claim charts or specific descriptions of product features:
I find that the notice letter sufficiently pleads knowledge for the eight patents-in-suit listed in the letter. The letter lists many LG products and states, " These products, and others made, used, sold, offered for sale, or imported into the United States by LG, infringe many of the patents in [Bench Walk's] portfolio." (D.I. 25-1 at 1-2). The letter then enumerates eleven patents, including eight of the ten …
One of the questions Courts have to answer when presented with an application for attorneys' fees under 35 U.S.C. § 285 is when to start the clock running on fees. The analysis can include objective and subjective factors, but in general (in this District at least) a patentee has to push through multiple warning signs and opportunities for reevaluation before its continued assertion of infringement will justify an award of fees.
Earlier this week, Judge Andrews awarded fees for plaintiffs' continued assertion of infringement after (1) an adverse claim construction decision and (2) subsequent notice from the defendant of non-infringement. After the Court granted summary judgment of non-infringement, the defendant moved for fees.
Today Judge Andrews reassigned a case to what appears to be a new visiting judge for the District of Delaware, Senior DistrictJudge JonPhipps McCalla of the Western District of Tennessee:
Case Reassigned to Judge Jon P McCalla of the United States District Court for the Western District of Tennessee. Please include the initials of the Judge (JPM) after the case number on all documents filed. (rjb) (Entered: 01/03/2022)
Emerson Process Management Regulator Technologies, Inc. v. Pietro Fiorentini (USA), Inc., C.A. No. 21-1488-JPM (D. Del.).
To my knowledge, this is the first referral of a Distrct of Delaware patent case to Judge McCalla, and he is not yet on the …
As we all get ready to drown another pestilential year in champagne and stuffed mushrooms, I thought it might be interesting to look back on how trials have progressed in the district this year as compared to 2020. Without further ado, I present to you the patent trial figures (as near as I can count them being already several mushrooms deep) for 2020 and 2021:
So there you have it folks, things are looking up (at least for patent lawyers who miss their trials), and the many steps the district has taken appear to have paid off.
Happy New Year, dear reader, I raise my next mushroom to your good health and successful trials.
Two weeks ago, we wrote about a new set of referral orders in five Chief Judge Connolly cases. These orders offer the parties the choice to either consent to referral to Magistrate Judge Hall, or have their case referred to a visiting judge.
At this point, all parties have responded, and three out of five sets of parties consented to jurisdiction before Magistrate Judge Hall rather than having the case referred to a visiting judge. Seems like a good result! It will be interesting to see whether the Court continues to use these orders going forward.
I didn't see any obvious patterns among the cases that did or did not consent, although five cases is too small …
The Delaware Default Standard for Discovery, discussed on these pages before, contains both patent- and non-patent-specific discovery rules and limits. Among them are a six-year limit on certain discovery in patent cases and a 10-custodian limit for electronic discovery. When the Default Standard is incorporated into the scheduling order (as it often is), its provisions are no longer guidelines or default provisions, but instead are requirements the parties must abide by, and which cannot be changed absent a showing of good cause.
Last week, Judge Burke resolved a number of discovery disputes in U.S. v. Gilead Sciences, Inc., C.A. No. 19-2103-MN, using the Default Standard (incorporated by reference into Judge Noreika's scheduling order) to guide his analysis.
First, Judge Burke denied the government's request for documents regarding manufacturing costs and other factors considered by defendant Gilead in pricing decisions in 2004:
The Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI") (the "Default Standard") sets a presumption that discovery from six years or more before the case's filing will not be permitted. . . . Here, in the few sentences of argument on this point in its briefing, . . . the Government does not provide enough information to establish the requisite good cause. During the teleconference, the Government suggested that good cause was established because it was only in 2004, and at no time thereafter, that Defendants had extensive discussions relating to the factors contributing to Truvada pricing decisions. However, that assertion is merely attorney argument, as there is no record evidence before the Court supporting such a conclusion.
Judge Burke also limited document discovery regarding Board of Directors meetings where pricing or the patents-in-suit were discussed to six years prior to the complaint, but did permit some discovery on those topics within the six-year period. ...
I wonder when slides like these were last used in district court?Jo Gala, Unsplash
Last week, in First Quality Tissue, LLC v. Irving Consumer Products Limited, C.A. No. 19-428-RGA (D. Del.), Judge Andrews issued the following order, apparently sua sponte:
ORAL ORDER: In connection with the argument currently scheduled for January 19, 2022 [regarding pending Daubert and summary judgment motions], the parties shall submit non-argumentative letters by January 4, 2022, specifying, in order of importance to the party, the issues they want to argue, with citations to where the relevant briefing can be found. The parties should not specify more than three issues each. At the argument, the total page limit for each sides …
Last month we wrote about Chief Judge Connolly's comments on the "sad reality" of referrals of SJ motions to a magistrate judge in patent cases:
[T]he sad reality in patent cases filed in this district is that a referral of a summary judgment motion [for an R&R] pursuant to § 636(b)(l)(B) inevitably results in objections to the magistrate judge's report and recommendation, which the district court judge must review de novo. Such a referral therefore ends up doubling the amount of judicial resources needed to resolve the summary judgment motion in question. For that reason, I no longer make § 636(b)(l)(B) referrals of summary judgment motions in patent cases to a magistrate judge.
(3) Inaccessibility of the Clerk’s Office. Unless the court orders otherwise, if the clerk’s office is inaccessible . . . on the last day for filing under Rule 6(a)(1) [a period stated in days or a longer unit], then the time for filing is extended to the first accessible day that is not …
In a recent order, issued shortly after the Markman hearing in Allergan USA, Inc. v. Aurobindo Pharma Ltd., C.A. No. 19-1727-RGA, Judge Andrews addressed the question of "how much weight should be assigned to a Patent Examiner's statement, in a Notice of Allowance, about the meaning of a claim."
He explained the background as follows:
During prosecution of the '291 Patent, Plaintiffs initially argued that the claimed percentage of mannitol, a well-known filler, should be calculated separately from the claimed percentage of filler. The Examiner disagreed, and, in his Notice of Allowance, indicated that the percentage of mannitol would be included in calculating the percentage of filler.
(emphasis added)
The plaintiffs/patentees urged the Court to ignore their initial statements and arguments, and instead adopt the Examiner's position. Judge Andrews declined to do so...
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
